Freshly Squeezed Trademark Cancellation Frozen

Sachoot Tari

Sachoot Tari 2007 LTD has a graphic trademark no. 220623 for Sachoot Tari, which means freshly-squeezed. 

Eco Alpha LTD applied to have the mark cancelled, claiming that Schut Tri has no rights to the mark, that they are guilty of inequitable behavior and that they are not actually using the mark. Sachoot Tari responded by requesting that the cancellation proceedings be struck from the record.

Pri-fer LTD (Prefer?) previously owned the mark, and, in a bankruptcy proceeding, Sachoot Tari purchased it. Pri-fre themselves purchased the mark from the draftsman which now works for Eco-Alpha. There was a mediated agreement between Pri-fer and Eco-Alpha that was ratified by the courts, and there is an ongoing dispute between Sachoot Tari and Eco-Alpha before the District Court. 

Sachoot Tari (Mark owner)’s Claims 

Sachoot Tari  claims that the request to cancel the trademark is groundless. The claim of lack of rights was based on a secret agreement between Pri-fer and Eco-Alpha, that allowed them to return to manufacturing juices under the mark in question. However, since this agreement was not before the courts when the mediation agreement was ratified, it has no effect. Furthermore, this unenforceable agreement cannot be used as the basis of a claim of inequitable behavior of a third party. Schut Tri claimed that they purchased the mark in a disbanding of Pri-fer, clean fron all liens under Section 34a of the the Sales Law 1968, and so Eco-Alpha LTD has no rights to request a cancellation proceedings. Furthermore, based on 2209/08 to Gigiesse Confezioni S.p.A. vs. Vampom LTD. (23/3/2010), Sachoot Tari claims that Eco-Alpha are estopelled from claiming non-use whilst they themselves are infringing the mark.

Sachoot Tari claims that since there are two court rulings in this matter (142/06 Multipri LTD. vs Sachoot Tari , Natural Fruit Juice LTD 11/5/2006, and 5128/07 Sachoot Tari Natural Fruit Juice LTDcs. Pri-fer Nsatural LTD. et al. 30/4/2007) consequently, Eco Alpha cannot claim rights based on secret agreements.

Finally, the parties have an ongoing court case concerning alleged infringement of the mark, where similar issues are being discussed. That case is at the conclusion stage and so there is no place to open a further proceedings in this matter.

 

Eco-Alpha’s Claims 

Eco-Alpha claims that there are factual issues between the parties that require a ruling, and that throwing the case out will prevent such a ruling issuing. They claim that Section 34a of the Sales Law cannot detract from the rights of an owner of a property. They do not consider that there has been a definitive court ruling on this matter, in that the earlier court rulings addressed different issues, and there was no positive ruling that the mark was in use. As Eco-Apha was not a party to the earlier court proceedings, they are not bound by them.

Whilst noting that there is a degree of overlap between the ongoing court proceeding and this cancellation request, this is acceptable since Commissioner of Patents and Trademarks has exclusive jurisdiction on cancellation issues.

The Ruling 

The Deputy Commissioner, Ms Jacqueline Bracha noted that Sachut Tri was arguing that the earlier cases estopelled the current hearing but that the ongoing court case addressed other issues.

However, she considered that the fact that the Court was willing to hear an infringement proceeding was indicative that the Court did not consider the earlier cases as final rulings on the subject. Consequently, she was not prepared to throw the case out as already decided by the court or as being groundless.

Furthermore, she accepted Eco-Alpha’s contention that in order to rule on the substantive issues, it was necessary to clarify the facts and thus it would be inappropriate to throw the case out.

However, she accepted the counter-claim of the Eco-Alpha to freeze the proceeding pending the District Court ruling, thereby preventing duplication of work by different courts.

COMMENTS

I think ‘Sachoot Tari’, meaning freshly squeezed, is sufficiently generic that it cannot be used as an indication of origin. The fact that the mark has been used by different companies, including Pri-fer and Sachoot Tari strengthens myfeeling that the mark is generic and descriptive.

 

 

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